The Court of Justice of the European Union (CJEU) has rejected an attempt to register "Carrera" as a Community trade mark (CTM) and in doing so upheld the EU General Court's decision that "cars" and "mobile navigation apparatus, in particular satellite-based mobile navigation apparatus" were similar goods and that consequently there was a likelihood of confusion arising.
Kurt Hesse, filed a CTM application to register the mark 'Carrera' in February 2007 in respect of, amongst other things, "apparatus for recording, transmission or reproduction of sound or images; television apparatus; magnetic data carriers; data processing equipment and computers for recording, processing or reproduction of sound or images". In July 2007, Porsche opposed the application based on their existing registered CTM in respect of the same word which had been granted in 2001.
The Opposition Division rejected Porsche's opposition in 2010 ruling that there was no likelihood of confusion between the two marks.
Following the Opposition Division hearing, Porsche appealed to OHIM's Board of Appeal. The Board of Appeal agreed with Porsche and annulled the Opposition Division's decision in respect of Hesse's attempt to register the mark in respect of "mobile navigation apparatus, in particular satellite-based mobile navigation apparatus."
In March 2011, Hesse took the case to the General Court which dismissed his case on the basis it was unfounded.
Hesse further appealed to the CJEU stating that the General Court had erred by not taking into full account the origin, marketing, distribution channels and points of sale of the goods, claiming if it had, it would not have found that there was similarity between them.
The CJEU refused to accept Hesse's argument. It held that lower court had already held that it had to take into account all of the relevant factors of the goods to determine their similarity and that Hesse's arguments did not overturn that finding.
Further, it held that Hesse was merely calling into question factual assessments by arguing that the General Court would not have reached its conclusion of similarity if it had given proper weight to the relevant factors.
Finally, the CJEU rejected Hesse's argument that the General Court was mistaken in finding that the earlier marks had acquired a reputation within the meaning of Article 8(5) of the Community Trade Mark Regulation. Consequently, the Court dismissed the applicant's appeal by ruling that its grounds of appeal was inadmissible or unfounded.
Success in the case is an important victory for Porsche and brings to an end the nine year battle.
The decision can be read in full here Kurt Hesse v OHIM and Others, Case C-50/15 P, 21 January 2016.in: Case Law, News, Trade Marks